Person's Co., Ltd. v. Christman

900 F.2d 1565 (1990)

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Nature of the Case

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Facts

In 1977, Takaya Iwasaki first applied a stylized logo bearing the name 'PERSON'S' to clothing in his native Japan. Iwasaki formed P, a Japanese corporation, to market and distribute the clothing items in retail stores located in Japan. D, a U.S. citizen, and employee of a sportswear wholesaler visited a P retail store while on a business trip to Japan. D purchased several clothing items bearing the 'PERSON'S' logo and returned with them to the United States. D developed designs for his own 'PERSON'S' brand sportswear line based on Ps products he had purchased in Japan. D produced clothing articles with the 'PERSON'S' logo attached. They were sold, beginning in April 1982, to sportswear retailers. D formed Christman formed Team Concepts, Ltd., a Washington corporation. All the sportswear marketed by Team Concepts bore either the mark 'PERSON'S' or a copy of P's globe logo; many of the clothing styles were apparently copied directly from P's designs. D filed an application for U.S. trademark registration in an effort to protect the 'PERSON'S' mark. P was becoming big in Japan and began implementing its plan to sell goods under the mark in the United States. Purchases by buyers for resale in the United States occurred as early as November 1982 some seven months subsequent to D's first sales in the United States. P filed an application for U.S. trademark registration in the following year, and, in 1985, engaged an export trading company to introduce its goods into the U.S. market. After recording U.S. sales near 4 million dollars in 1985, P granted California distributor Zip Zone International a license to manufacture and sell goods under the 'PERSON'S' mark in the United States. P's advertising in the U.S. became known to D. Both became aware of confusion in the marketplace. P petitioned to cancel D's registration on the following grounds: (1) likelihood of confusion; (2) abandonment; and (3) unfair competition within the meaning of the Paris Convention. The Board held for D on the grounds that P's use of the mark in Japan could not be used to establish priority against a 'good faith' senior user in U.S. commerce. The board granted summary judgment and P appealed.